by Legalnaija | Jun 6, 2020 | Uncategorized
COMPULSORY LICENSING OF
PATENTS AS A PALLIATIVE TO COVID-19 PANDEMIC[1]
The
disruption occasioned by the corona virus pandemic globally is the defining
occurrence of our time. It has affected all spheres and sectors of the global
society, of which the intellectual property terrain is not an exception. With
the announcement of the World Health Organisation (WHO) multi-country clinical
trials termed “Solidarity Trials”[2] and increased funding of various
research groups around the world, a cure is imminent. However, this possible
cure raises some intellectual property rights concerns regarding the protection
of the exclusive patent rights embedded in the inventions of new drugs,
modifications of previously existing drugs or novel medical testing equipment.
Some of the drugs approved for clinical trials by WHO already possess patent
protection, like Remdesivir,[3]
and attempts have been made in some
countries, like China, to patent similar Covid-19 treatment drugs.[4] This has sparked a lot of debate by
members of the public who fear that patent owners of essential inventions may
abuse their exclusive rights to such patents for the purpose of increasing
profitability. To address a problem of this nature, various international
instruments and treaties[5] signed by several nations,[6] introduced the concept of compulsory
licensing of patents to permit the exploitation of the exclusive rights held by
a patentee over an invention, without necessarily obtaining his consent.[7] However, contrary arguments have
arisen on the fairness of such measure on patent owners, its disincentive to
innovation and hindrance to the right of patent exclusivity. In light of this,
one uniform question resonating in the minds of the public is whether these
arguments are still viable with reference to the use of such essential inventions
during extreme emergencies like the Covid-19 pandemic.
UNDERSTANDING THE NATURE OF
PATENTS
A patent is an exclusive
protection granted to an inventor as a reward for his/her ingenuity or
intellectual creativity. This monopolistic right held by a patentee does not
exist in perpetuity; it subsists for a specified duration of time after which
it falls into the public domain. The rationales for such monopoly is to promote
economic and technological development, encourage creative efforts and to
enable the inventor derive benefits from his invention before it falls into the
public domain. In most jurisdictions, with the aid of international treaties,[8] the duration of a patent typically
spans for at least 20 years. In Nigeria, a patent expires at the end of the
twentieth year from the date of the filing of the patent application.[9]
It is pertinent to note that
it is not all inventions that are patentable. The Agreement on Trade Related
Aspects of Intellectual Property Rights (TRIPS Agreement) provide that “patents
shall be available for any inventions, whether products or processes, in all
fields of technology, provided that they are new, involve an inventive step[10] and are
capable of industrial application.”[11] Also, the Patents and Designs Act
(PDA) in Nigeria stipulates similar provisions on the patentability of an
invention, the PDA provides that “an invention is patentable if it is new,
results from inventive activity and is capable of industrial application; or if
it constitutes an improvement upon a patented invention which is similarly new,
results from inventive activity and is capable of industrial application.”[12]
RIGHTS CONFERRED BY A PATENT
The exclusive rights to a
patent conferred on a patentee could be in relation to either a product or
process. In the instance where the patent rights granted relates to a product,
the patentee has the exclusive right to prevent third parties from making,
using, offering for sale, selling, importing or stocking the resulting patented
products for the purpose of sale or use without obtaining its authorization.[13] In the instance where the patent
rights are granted as a result of a novel process created by the patentee, the
patentee has the exclusive right to exclude third parties from using or
applying the process, offering the process for sale, selling, or importing the
product obtained directly from the use of its process without its consent.[14] In addition, patentees also have
the exclusive right to assign the patent, or transfer the patent by succession,
and to conclude licensing contracts.[15]
It should be noted that
these exclusive rights are not without limitations or exceptions. The rights
under a patent in Nigeria, extends only to acts done for industrial or
commercial purposes and does not extend to acts done in respect of a product
covered by the patent after the product has been lawfully sold in Nigeria,
except in so far as the patent makes provision for a special application of the
product, in which case the special application will continue to be reserved to
the patentee.[16]
COMPULSORY LICENSING OF
PATENT
Despite the exclusive nature
of the rights bestowed on a Patent owner, there are a number of limitations to
those exclusive rights. Compulsory licensing is one of such limitations.
Compulsory licensing of a patent involves the use of a patented product or
process without necessarily obtaining the consent of the Patent owner. The
concept of compulsory licenses has been recognized by various international
treaties and agreements. Article 5(2) of the Paris Convention for the
Protection of Industrial Property[17] empowers each contracting state
party to the convention with the right to “grant compulsory licenses to
prevent abuses which might result from the exercise of exclusive rights
conferred by the patent…” Also, Article 31 of the TRIPS Agreement
authorizes all member states to the agreement to use compulsory licenses
without the authorization of the right holder in appropriate circumstances.
Paragraph 5(b) of the Doha Declaration[18] similarly states that “each
member has the right to grant compulsory licenses and the freedom to determine
the grounds upon which such licenses are granted.”
This kind of license is
usually applied to and granted by the court based on certain specified grounds[19] or authorized by the Minister in
the interest of the public. When issued, the license is non-exclusive, it does
not permit the compulsory licensee to carry out importations or grant further
licenses except in limited circumstances.[20] Although it is usually issued after
the expiration of a period of four years after the filing of a patent
application or three years after the grant of a patent,[21] there are other instances when it
can be issued before the expiration of the four year period. One of such
instances is governmental use of a patented invention as an emergency resort
during a period of emergency like the COVID-19 public health emergency.
Paragraph 4 of the Doha Declaration expressly permits WTO members to take
measures to protect the public health of its citizens. Similarly, Paragraph 16
of the Patents and Designs Act in Nigeria also stipulates when a compulsory
license can be issued for public health reasons.
In situations of a public
health emergency and in the interest of the public, the Minister is empowered
to authorize any person to purchase, make, exercise or vend any patented
article or invention for the service of a government agency in Nigeria.[22] Such powers are exercised by the
Minister when the minister is satisfied that such patented article or invention
is necessary or expedient “…for the maintenance of supplies and services
essential to the life of the community; or for securing a sufficiency of
supplies and services essential to the well-being of the community…”[23]
However, the enforcement of
provisions in various patent laws relating to compulsory licensing during situations
of an emergency is not recent. On June 8, 2005, the Eritrean Minister of Health
relied on the provisions of the TRIPS Agreement and Doha Declaration to issue a
compulsory license for the importation of patented antiretroviral drugs in
Eritrea.[24] This issuance was following his
earlier declaration of a state of emergency on the spread of HIV/AIDS in
Eritrea.[25] He stated that the antiretroviral
medicines would be used non-commercially to treat persons diagnosed with
HIV/AIDS in their country.[26] Similarly, on 26 October 2005,
following a declaration of a state of emergency on the spread of HIV/AIDS in Ghana,
the Ghanaian Health Minister issued a compulsory license for the importation of
patented generic HIV/AIDS medicines in Ghana.[27] He relied on the state’s membership
of World Trade Organisation (WTO) after carefully considering two of WTO’s
texts, being the TRIPS Agreement and Doha Declaration.[28]
Also, the Taiwanese
government issued a compulsory licence for the generic production of Tamiflu,
a patented drug owned by the pharmaceutical manufacturer, Roche, for the
treatment of persons diagnosed with the avian flu in order to ensure the
country has sufficient quantities of the drug in anticipation of a foreseeable
pandemic.[29]
More recently, following
WHO’s declaration of the corona virus as a global public health emergency,[30] several countries began taking
pre-emptive measures by issuing compulsory licenses and amending existing laws
to accommodate the issuance of compulsory licences in response to the ongoing
pandemic. On 18 March 2020, Israel issued compulsory patent licenses for the
importation of lopinavir/ritonavir, which is a patented HIV
medicine and one of the approved testing drugs by WHO, for the treatment of its
corona virus patients.[31] On 25 March 2020, the Canadian
government amended its existing laws to expedite the issuance of compulsory
licenses on patented inventions necessary for the treatment of Covid-19 in
Canada.[32] Similarly, the Ecuadorian
government approved a resolution in its legislative committee on compulsory
licensing of patents relating to Covid-19 technologies.[33]
CONCLUSION
Irrespective of the
exclusive nature of patented inventions, such monopolistic rights are not
without limitations. During periods of emergencies, like the current public
health emergency occasioned by the Covid-19 pandemic, the government is
empowered through a system of compulsory licensing to interfere with exclusive
patent rights over essential inventions in the interest of the public.[34] The arguments raised by various
creatives on the resultant effect of such measures as a disincentive to
innovation and a clog on patent exclusivity rights can be resolved with the
payment of appropriate compensation. The provisions in some of the
international treaties relating to patent stipulate that “each member has
the right to grant compulsory licenses and the freedom to determine the grounds
upon which such licenses are granted.”[35] Taking
a glance at what is obtainable in some countries, royalties or lump sum
payments can be made to patent owners whose medical inventions are
non-voluntarily licensed on public interest grounds, to compensate them for the
use of their patents, their ingenuity, and the amount of funding expended
during the development stage of such inventions.[36] The current Patents and Designs Act
in Nigeria which precludes any payments to the patentee whose invention has
been compulsorily licensed on public interest grounds should be amended to
accommodate payment of reasonable compensation to patentees.[37]
Also, patentees could
consider the idea of voluntary licensing of their patent rights and entering
negotiations with relevant authorities once they discover that their inventions
are needed in periods of emergencies, as part of their civic duties to the
state. Instead of viewing compulsory licensing as a hindrance on their
exclusive rights they could consider it as a fulfilment of their collective
social responsibility to their community and use this medium to negotiate other
kinds of benefits from the government, like tax reductions and other
incentives, in exchange for access to their exclusive rights. In this regard,
the need to engage the services of an intellectual property lawyer,
well-grounded in the field of patent rights protection, would be relevant in
negotiating and drafting such agreements.
__________________________________________________________________
For further information on
this article and area of law, please contact Sandra Eke at:
234.
P. A. Ajibade & Co., Lagos by telephone
(+234.1.460.5091, 460.5092),
Mobile (+234.703.385.7874;
+234.811.249. 1286) or
Email (seke@spaajibade.com)
www.spaajibade.com
[1]
Sandra Eke, Associate Intellectual Property & Technology Law, SPA Ajibade
& Co., Lagos, Nigeria.
[2]
WHO, “WHO Director-General’s opening remarks at the media briefing on
COVID-19” available at: https://www.who.int/dg/speeches/detail/who-director-general-s-opening-remarks-at-the-media-briefing-on-covid-19—18-march-2020 accessed
15 April 2020.
[3]
Remdesivir, a Gilead product originally developed for other viral infections,
including Ebola and Marburg virus, is one of the drugs approved by WHO
for clinical trials for Covid-19. However, Remdesivir is widely patented across
various countries in the world. See Medicines Law & Policy, “Covid-19 and
the comeback of compulsory licensing” available at: https://medicineslawandpolicy.org/2020/03/covid-19-and-the-come-back-of-compulsory-licensing/ accessed
14 April 2020.
[4]
IAM, “Wuhan lab says it will seek patent protection of Gilead antiviral”
available at: https://www.iam-media.com/coronavirus/wuhan-lab-says-it-will-seek-patent-protection-of-gilead-antiviral accessed
17 April 2020.
[5]
Like the Trade Related Aspects of Intellectual Property Rights (TRIPS
Agreement) 1994, Annex 1C of the Marrakesh Agreement Establishing the World
Trade Organization; Paris Convention for the Protection of Industrial Property
1883, 21 U.S.T. 1583 and 24 U.S.T. 2140, T.I.A.S. No. 6923; and the Doha
Declaration on the TRIPS Agreement and Public Health 2001, WTO Doc. WT/MIN
(01)/DEC/1, 41 ILM 746.
[6]
See WIPO, “WIPO Administered treaties; contracting parties” available
at: https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=2 accessed
13 April 2020.
[7]
The Center for Internet and Society, “Grounds for Compulsory Patent
Licensing in United States, Canada, China, and India” available at: https://cis-india.org/a2k/blogs/grounds-for-compulsory-patent-licensing-in-us-canada-china-and-india#_ftn40 accessed
14 April 2020.
[8]
For instance, Article 33 of the Trade Related Aspects of Intellectual Property
Rights (TRIPS Agreement) provides that “the term of protection available
shall not end before the expiration of a period of twenty years counted from
the filing date.”
[9]
S.7 (1) Patents and Designs Act (PDA), Cap P2, LFN 2004.
[10]
The TRIPS Agreement also provides that the term “inventive step” may be
deemed to be synonymous with the term “non-obvious.” That is to say that
if it were obvious to a person of ordinary skill in the field concerned, it
would not progress to the stage qualifying for patent protection.
[11]
Article 27(1) of the TRIPS Agreement.
[12]
S.1 (1) PDA.
[13]
See S.6 of PDA and Article 28 (1) of the TRIPS Agreement.
[14]
Ibid.
[15]
Article 28 (2) of the TRIPS Agreement.
[16]
S.6 (3) of PDA.
[17]
The Paris Convention is an intellectual property treaty covering industrial
property: patents, trademarks, industrial designs, utility models, service
marks, trade names, and geographical indicators. See, WIPO, “Summary of the
Paris Convention for the Protection of Industrial Property
(1883)” available at: http://www.wipo.int/treaties/en/ip/paris/summary_paris.html accessed
15 April 2020.
[18]
WHO, “The Doha Declaration on the TRIPS Agreement and Public Health 2001” available
at: http://www.who.int/medicines/areas/policy/doha_declaration/en/ accessed
15 April 2020.
[19]
See Para 1, Pt. 1, Schedule 1, PDA.
[20]
Para 6, Pt.1, Schedule 1, PDA.
[21]
Para 1, Pt. 1, Schedule 1, PDA.
[22]
See Para 15 and 20, Pt. 2, Schedule 1, PDA.
[23]
Para 20(b) and (c), Pt. 2, Schedule 1, PDA.
[24]
NLIPW Patents Law, Vol. 1, and No.9, available at: https://nlipw.com/10-examples-of-the-use-of-compulsory-licenses-in-africa-2/ accessed
14 April 2020.
[25]
Ibid.
[26]
Ibid.
[27]
Ministry of Health Ghana, “Notification of Emergency and Issuance of
Government Use of License” available at: http://www.cptech.org/ip/health/cl/Ghana.png accessed
15th April 2020.
[28]
Ibid.
[29]
ICTSD, “Taiwan issues Compulsory License for Tamiflu” available
at: https://www.ictsd.org/taiwan-issues-compulsory-license-for-tamiflu accessed
14 April 2020.
[30] BBC
News, “Coronavirus declared global health emergency by WHO” available
at: https://www.bbc.com/news/world-51318246 accessed
15 April 2020.
[31]
The Emergency Department, Ministry of Health, “A Permit to the State to
Exploit an Invention Pursuant to Chapter Six, Article Three of the Patents Law
5727-1967” available at: https://www.keionline.org/wp-content/uploads/A-Permit-to-the-State-to-Exploit-an-Invention-Pursuant-to-Chapter-Six-Article-Three-of-the-Patents-Law-5727-1967.pdf?_sm_au_=iVVvns5WHQ11sMDPvMFckK0232C0F accessed
15 April 2020.
[32]
IAM, “The key covid-19 compulsory licensing developments so far”
available at: https://www.iam-media.com/coronavirus/the-key-covid-19-compulsory-licensing-developments-so-far accessed
17 April 2020.
[33]
Knowledge of Ecology International “Legislative Committee in Ecuador
approves resolution on compulsory licensing of patents relating to the
coronavirus” available at: https://www.keionline.org/32429 accessed
17 April 2020.
[34]
Ibid 20.
[35]
Paragraph 5(b) of the Doha Declaration and Art. 31(h) of the TRIPS Agreement.
[36]
A number of countries who issued compulsory licenses on HIV/AIDS drugs in the
past years, set royalty rates for the use of such licenses. Malaysia set a
royalty rate of 4% for such licenses; Mozambique established a 2% royalty;
Zambia set a 2.5% royalty; and Indonesia set a 0.5% royalty. See WHO,
“Remuneration guidelines for non-voluntary use of a patent on medical
technologies” available at: https://www.who.int/hiv/amds/WHOTCM2005.1_OMS.pdf accessed
17 April 2020.
[37]
See S.17 (d) of the PDA.
Source: www.spaajibade.com
by Legalnaija | Jun 6, 2020 | Uncategorized
Following the lockdown order
issued by the President of the Federal Republic of Nigeria in Lagos, Abuja and
Ogun States to combat the spread of COVID-19 pandemic, businesses and offices
including intellectual property offices and courts in these jurisdictions have
been mandated to substantially suspend operations. It is no longer business as
usual and it is expected that this event will impact the protection and
enforcement of intellectual property rights such as copyrights, trade secrets,
trademarks, patents, and industrial designs in Nigeria in various ways. The major
IP protection system likely to be affected include the IP registration and
enforcement systems highlighted below.
IP Registration System
One of the methods of
protecting rights to inventions, industrial designs and trademarks in Nigeria
is through the registration process.[2] Owners of these rights may
experience challenges in prosecuting applications for registration and renewal
at the Trade Marks, Patents & Designs Registry (Registry), and complying
with timelines for performing obligations stipulated in the Trade Marks Act[3] (TMA) and Patents & Designs Act[4] (PDA) during the lockdown period and
after the lockdown is lifted. Copyright and trade secrets protection may not be
affected under the registration system as rights holders do not require
registration or periodic renewals to maintain rights over them.[5] However, the Nigerian Copyright
Commission (Commission) established a voluntary electronic database
for owners of copyrights to notify the Commission of their creations in
order to maintain an effective archive of local copyrighted works.[6] Although the Registry and Commission
are closed, they both have online platforms for registration which IP owners
may utilize this season.[7] Some of the possible effects of the
closure of IP offices include a reduction in the number of IP applications
filed at the Registry, delays in registration of IP rights and extension of the
deadlines stipulated in the TMA & PDA.
(a)
Reduction in IP Applications
There is likely to be a
reduction in the number of trademark, patent and design applications for
registration, renewal, and recordation filed at the Registry and applications
for lodging copyright notifications at the Commission due to depletion in
economic activities.[8] Despite the presence of an online
platform, the Registry and Commission may receive fewer applications this
period and it is not certain that these applications will be attended to due to
closure of the offices, where further administrative steps are required.
(b)
Extension of deadlines
Deadlines for filing
applications or doing any act stipulated in the TMA and PDA may require
adjustments as it may be impossible for IP owners/applicants to comply with the
applicable timelines especially if this falls within the lockdown period.
According to the Trade Mark Regulations (Regulation),[9] where deadlines for doing any
particular act stipulated in the TMA or the Regulation falls on a day the
Registry is not open, it will be lawful for any person to do such act on the
first day the Registry reopens its office.[10] Based on this provision, it should
be lawful for IP owners/applicants to file applications for
registration/renewal, or do any other act required by the TMA or the Regulation
on the day the Trade Marks Registry resumes operations. The Regulation also
stipulates that the Registrar may grant an extension of time for doing any act
if the time for doing the act is not stipulated in the TMA and not prescribed
by Regulation 78 or 81.[11] The Registrar must also be
satisfied that the circumstances justify an extension of the time for
compliance.[12] Hence, an extension of time may
only be granted by the Registrar for performing acts stipulated in the
Regulation except acts stipulated in Regulation 78 or 81 of the Regulation,
where the time for doing the acts is not expressly contained in the TMA.[13]
For designs, an applicant
may apply for an extension of time where an application for registration of a
design is not completed within twelve months of the date of filing which may be
rejected if the applicant does not submit an application for extension of time.[14] The Registrar
may allow such extensions subject to any conditions
he may impose.[15] Furthermore, an application for
registration will be rejected if it is not completed within fifteen months from
the date of filing due to the default of the applicant.[16] Although the PDA stipulates
that a patent shall lapse if the prescribed annual fees are not duly paid, it
gives a grace period of six months within which the annual fees may be made, if
the fees and any prescribed surcharge are paid within that period.[17]
In addition to the grace
periods mentioned above for applicants to comply with stipulated timelines, it
may be necessary for the Registrar of Trade Marks and Registrar of Patents and
Designs to extend deadlines provided for doing required acts, or stay all
deadlines pending when the lockdown order has been lifted. Some IP offices in
other jurisdictions have extended deadlines for filing trademark documents. For
instance, the United States Patent and Trademark Office (USPTO) has extended
the time within which certain trademark-related documents may be filed. [18] The Director of the USPTO stated
that persons that are unable to meet trademark-related deadlines due to the
COVID-19 outbreak would be granted a 30-day extension for deadlines that fall
between 27th March and 30th April 2020.[19] The Italian Patent and Trademark
Office has also provided a stay of all official deadlines falling within 9th March
and 3rd April 2020.[20] Similarly, the UK Intellectual
Property Office (UKIPO) stated that it will extend deadlines where national and
international legislation allows.[21] The UKIPO also mentioned that where
a deadline has been missed, which results in a loss of rights, they may be able
to restore or reinstate the right depending on the circumstances of each case.[22]
(c)
Delay in Processing Registration
After the pandemic, the
registry may experience delays in processing applications due to backlogs of
applications accrued during the pandemic and influx of new applications after
the pandemic. In light of this, it may be imperative for IP owners to leverage
alternative modes of protecting their IP rights during the pendency of their
applications at the Registry.[23]
IP Enforcement System
IP Rights may be enforced
through the court system by instituting actions for infringement including
passing-off and misappropriation of trade secret actions at the Federal High
Court (FHC).[24] IP rights may also be enforced by
appealing the decision of the Registrar of Trade Marks, at the FHC via an
action for judicial review. Furthermore, trademark rights may also be enforced
through opposition proceedings which are heard by the Registrar of Trade Marks.
Some of the possible effects of the pandemic on the local IP enforcement system
include adjournment of existing matters, extension of deadlines for filing
actions/appeals, and delays in court/opposition proceedings and hearings.
(a)
Adjournment of existing matters and Extension of deadlines for filing
actions/appeals
Court proceedings may be
affected due to the COVID-19 pandemic as court sittings have been suspended and
only court matters that are urgent, essential or time-bound according to our
extant law can be heard, in line with the Chief Justice of Nigeria’s circular.[25] Due to this, parties involved in IP
disputes or who intend to commence an action or appeal at the FHC may not be
able to institute such actions at this time and meet the deadline for
instituting such actions and appealing the decision of the Registrar of Trade
Marks, at the FHC via an action for judicial review. For instance, Order 53
Rule 2 (2) of the Federal High Court (Civil Procedure) Rules 2019 stipulates
that a notice of motion by which an appeal is brought shall be entered
within (30) days after the date of the order, determination or other decision
against which the appeal is brought. Where the 30-day limitation
period falls within the lockdown period, it may be impossible for an appellant
to institute such action within time. In view of this, the Chief Justice of
Nigeria is expected to issue a further directive on compliance with prescribed
timelines for filing processes and institution of actions, and issuance of new
hearing dates.[26]
In addition to its
administrative duties, the Registrar of Trade Marks also performs
quasi-judicial duties. The Trade Marks Registry provides a forum for IP rights
holders or interested parties to contest the ownership of trademarks under
consideration through the opposition process. The outcome of an opposition
determines whether a trademark will be registered.
The TMA and Regulation
provide timelines within which opposition processes should be filed at the
Registry. According to the TMA, after a Trade Marks Journal has been published,
any person (opponent) may give a notice of opposition to the Registrar within
two-months from the date the journal was published, after which an applicant is
required to respond with a counterstatement within one month after the date on
which the copy of the notice of opposition is received.[27] If the applicant does not file a
counterstatement, it will be taken that the applicant has abandoned its
application.[28] Upon receipt of a counterstatement
by the opponent, the opponent is required to leave with the Registrar evidence
by way of statutory declaration in support of such opposition as initiated.[29] If an opponent leaves no evidence,
then unless the Registrar directs otherwise the opponent shall be deemed to have
abandoned the opposition.[30] Where the opponent leaves evidence,
the applicant is also required to leave with the Registrar such evidence by way
of statutory declaration within one month from the receipt of the copies of
opponent’s declarations.[31] Based on Regulation 105 of the
Regulation, where the Registry is not open on the day a process should be
filed, the processes may be filed on the first day following the excluded day
which in this case would be after the lockdown order has been revoked. Such
affected person may also apply for an extension of time to file its statutory
declaration only, as an extension of time may only be granted where the period
given for doing an act is not contained in the TMA. The period within which a
statutory declaration should be filed is not contained in the TMA but it is
stipulated in the Regulation. However, the decision of whether parties may
apply for an extension of time to file opposition processes after the pandemic
may be subject to the directive of the Registrar. The power of the Registrar to
extend time is also buttressed in Regulation 52 which provides that if an
opponent does not file a statutory declaration, he shall, unless the Registrar
otherwise directs, be deemed to have abandoned his application. In Nabisco
Inc. v. Allied Biscuits Company Ltd[32] the Supreme Court held that where
an opponent as in this case failed to file a statutory declaration as provided
in Regulation 51, by virtue of Regulation 52, he is deemed to have abandoned
his opposition unless the Registrar otherwise directs. The Supreme
Court further held that although the order of the Registrar is badly and
inelegantly worded, it was in exercise of the discretion conferred on him by
Regulation 52.
Considering the
impossibility of hearing opposition matters, it may be necessary for the
Registry to issue new dates for hearing matters that had been scheduled to be
heard during the lockdown, as well as time prescribed by the Act for initiating
oppositions.
(b)
Delay in Court and Opposition Proceedings
There are likely to be
delays in hearing court and opposition matters due to suspension of court
sitting and opposition matters. The FHC may experience challenges in hearing
both the old and new matters expeditiously considering the current heavy
workload of the court. Matters which should have been instituted during the
lockdown period will now be filed after the lockdown order has been revoked.
There is an urgent need for the Nigerian justice delivery sector, including the
Trade Marks Registry, to consider adoption of virtual hearings which could also
be utilized during unforeseen incidents such as the COVID-19 pandemic.
Conclusion
Although courts in other
jurisdictions have suspended oral hearings, some have adopted the use of
virtual hearings during this crisis. The UK Supreme Court and Judicial
Committee of the Privy Council will hear all matters and deliver judgments
through video conferencing.[33] Similarly, in Kenya pending
judgments and rulings would be delivered via Skye and by emails.[34] The COVID-19 pandemic will certainly
impact the registration and enforcement system for protecting IP rights in
Nigeria and IP offices including courts may be required to come up with
measures to ameliorate the effect on the system. In view of this, it may be
expedient for IP owners to explore alternative modes of acquiring rights over
their intellectual property and alternative dispute resolution mechanisms for
enforcing their rights post COVID-19.
___________________________________________________________________
For further information on
this article and area of law, please contact Bisola Scott at:
S. P. A. Ajibade & Co.,
Lagos by telephone (+234.1.460.5091, 460.5092),
Mobile (+234.817.939.0319;
+234.811.389. 8102) or
Email (bscott@spaajibade.com)
www.spaajibade.com
[1] Bisola
Scott, Associate Intellectual Property & Technology Department, SPA Ajibade
& Co., Lagos, NIGERIA.
[2]
In addition to registration, trademarks may also be protected through use. See
section 7 Trade Marks Act Trade Marks Act Cap T 13, Laws of the Federation of
Nigeria 2004. Inventions may also be protected as trade secrets and copyright.
[3]
Cap T 13, Laws of the Federation of Nigeria 2004 (TMA).
[4]
Cap. P2, Laws of the Federation of Nigeria 2004 (PDA).
[5]
There is no statutory requirement for registration of copyright. Trade secret
protection is not a statutorily recognized right in Nigeria; however, it is
recognized and enforceable under the common law. Owners of trade secrets have
to take reasonable measures to maintain their secrecy.
[6]
See the Nigerian Copyright Commission website, available at: http://www.eregistration.copyright.gov.ng/ncc/about,
accessed on 10th May 2019.
7
Applicants can only obtain acknowledgement forms through the trademark
electronic filing platform at this time.
[8] The
organisations exempted include hospitals and all related medical
establishments, health care related manufacturing and distribution, food
processing, distribution, and retail companies, petroleum distribution and
retail entities, power generation, transmission, and distribution
companies; private security companies and; workers in
telecommunication companies, broadcasters, print, and electronic media. See
COVID 19 Regulation 2020, https://pwcnigeria.typepad.com/files/fg-covid-19-regualtions.pdf accessed
on 14th April 2020.
[9]
1967, T 13, Laws of the Federation of Nigeria 2004 (TMR).
[10]
Regulation 105 Trade Marks Regulation 1967, T 13, Laws of the Federation of
Nigeria 2004 (TMR).
[11]
Regulation 105 TMR.
[12]
Ibid.
[13]
See Nabisco Inc. v. Allied Biscuits Company Ltd (1998) 10 NWLR (Pt.568)16.
[14]
Rule 29 Design Rules, Subsidiary legislation to the Patents and Designs Act,
Cap. P2, Laws of the Federation of Nigeria 2004.
[15]
Ibid.
[16]
Ibid.
[17]
Section 7 (1) (2) a & b Patents and Designs Act, Cap. P2, Laws of the
Federation of Nigeria 2004 (PDA).
[18]
Raisa Dyadkina, USPTO Extends Trademark-Related Timing Deadlines under
the CARES Act, as Other National Trademark Offices Extend their Timing
Deadlines or Provide Notice of Delays, available at https://www.lexology.com/library/detail.aspx?g=65d628ad-487c-457c-9b4e-9e66236b7122&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+General+section&utm_campaign=Lexology+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2020-04-13&utm_term=,
accessed on 13th April 2020.
[19]
Ibid.
[20]
The stay is for deadlines which involve activities with the Italian Patent and
Trademark Office, except mandatory deadlines in opposition proceedings. JD
SUPRA, Covid-19 IP Update: Intellectual Property Office
developments, available at https://www.jdsupra.com/legalnews/covid-19-ip-update-intellectual-52898/
[21]
Ibid.
[22]
Ibid.
[23]
For recommended ways of protecting pending trademarks, visit https://www.mondaq.com/Nigeria/Intellectual-Property/740682/Recommended-Ways-To-Protect-Pending-Trademarks-In-Nigeria.
Invention may also be protected as trade secrets and copyrights.
[24]
Court actions may be civil or criminal in nature.
[25]
See COVID 19 Regulation 2020, https://pwcnigeria.typepad.com/files/fg-covid-19-regualtions.pdf accessed
on 14th April 2020.
25
Kolawole Mayomi et al, Covid-19 Pandemic, Lockdown of Court Registries
and Filing of Suits: Should the Limitation Laws be Suspended? available
at http://www.spaajibade.com/resources/wp-content/uploads/2020/04/DisputeResolution.Covid-19-Suspension-of-Limitation-of-Time.pdf,,
accessed on 20th April 2020.
[27]
Section 20 (1) TMA.
[28]
Section 20(3) TMA.
[29]
Reg. 51 Regulation.
[30]
Reg. 52 Regulation.
[31]
Ibid.
[32]
(1998) 10 NWLR (Pt.568)16.
[33]
Reuters, UK supreme court switches to video conferencing, available
at
https://www.reuters.com/article/health-coronavirus-britain-courts/uk-supreme-court-switches-to-video-conferencing-idUSS8N28M0IT,
accessed on 15th April 2020.
[34]
Techweez, Kenya’s Judiciary is using Email and Videochat to Deliver Pending
Judgements and Rulings, available at https://techweez.com/2020/04/01/judiciary-using-email-and-video-chat-to-deliver-judgements/,
accessed on 16th April 2020.
Source: www.spaajibade.com
by Legalnaija | Jun 6, 2020 | Uncategorized
Applicable requirements
as to form of arbitral awards
·
Must an award take any particular form (eg, in writing, signed,
dated, place, the need for reasons, delivery)?
The primary legislation applicable to arbitration is the
Arbitration and Conciliation Act, Chapter A18, Laws of the Federation of Nigeria 2004 (ACA).
Section 26 of the
ACA states that an arbitral award shall be in writing and signed by the
arbitrator or arbitrators, and that if the arbitral tribunal comprises of more than one arbitrator,
the signatures of a
majority of the
members of the
arbitral tribunal shall suffice providedthe reason for the absence of any signature is stated.
Furthermore, the award shall state the reasons upon which its
conclusions are based unless the parties have agreed that no reasons are to be
given or the award is on agreed terms under section 25 of the ACA (consent award).
The award shall also state the date on which it was made and the place of arbitration. A copy of the award shall be
delivered to each party.
Applicable procedural law
for recourse against an award
2 Are there
provisions governing modification, clarification or correction of an award?
Section 28 of the
ACA provides that a party may, within 30 days of receipt of an
arbitral award, with notice to the other party, request the arbitral tribunal
to correct in the award any errors in computation, any clerical or
typographical errors or any errors of a similar nature, and give an interpretation of a specific point or part
of the
award. The tribunal shall revert within 30 days. The tribunal may also on its
own volition, within 30 days of the
date of the
award, correct any error.
The parties can also request the arbitral tribunal to make an
additional award as to the claims presented in the arbitral proceedings but
omitted from the award. An additional award shall be made within 60 days of the request.
Applicable procedural law
for recognition and enforcement of arbitral awards
·
May an award be appealed to or set aside by the courts? If so,
on what grounds and what procedures? What are the differences between appeals
and applications for set-aside?
An arbitration award is final and there is no provision for an
appeal arising therefrom under Nigerian law. However, sections 29 and 30 of the ACA provide three
grounds for setting aside a domestic award.
Section 29(2) provides that the court may set aside an arbitral
award if a party
makes an application (on notice to the other party) and furnishes proof that
the award contains decisions on matters that are beyond the scope of submission to
arbitration. However, if the
decisions on matters submitted to arbitration can be separated from those not
submitted, only that part of the
award that contains decisions on matters not submitted may be set aside.
Section 30(1) provides two further grounds for setting aside an
arbitral award. The first ground is if an arbitrator has misconducted himself or herself. The instances of misconduct were set out
by the Supreme Court of Nigeria
in Taylor Woodrow (Nig.) Limited v S.E. GmbH [1993] 4 NWLR (Pt 286) 127.
Second, the court may set aside an award if it was improperly procured or
tainted by fraud.
Whereas an appeal attacks the merits of an arbitral award (which
is not permitted under Nigerian law), a setting aside application is
essentially a complaint that due process was not observed by an arbitral
tribunal in making an arbitral award.
With regard to international awards, section 48 of the ACA
(which mirrors article V of the New York Convention 1958) provides two grounds
for setting aside the award:
·
if a party making the application furnishes proof that – (i)
that a party to the arbitration agreement was under some incapacitation; (ii)
that the arbitration agreement is not valid under the law that the parties have
indicated should be applicable; (iii) that he or she was not given proper
notice of the appointment of an arbitrator, or of the arbitral proceedings, or
was otherwise not able to present his case; (iv) that the award deals with a
dispute not contemplate by, or falling within the terms of the submission to
arbitration; (v) that the award contains decisions on matters that are beyond
the scope of the arbitration; (vi) that the composition of the arbitral
tribunal or the arbitral procedure was not in accordance with the agreement of
the parties; (vii) where there was no agreement within the parties under
paragraph vi, that the composition of the arbitral tribunal or the arbitral
procedure was not in accordance with this Act [the ACA]; or
·
if the court finds that – (i) that the subject matter of the
dispute is not capable of settlement by arbitration under the laws of Nigeria;
or (ii) that the award is against the public policy of Nigeria.
·
What is the applicable procedural law for recognition and
enforcement of an arbitral award in your jurisdiction? Is your jurisdiction
party to treaties facilitating recognition and enforcement of arbitral awards?
Section 51 of the ACA
provides that an arbitral award shall, irrespective of the country in which it
is made, be recognised as binding and shall, upon the award creditor’s
application, be enforced by the court.
Nigeria is a signatory to the New York Convention (NYC), and has
domesticated the Convention by incorporating it as the Second Schedule to the
ACA. Thus, a foreign arbitral award may be enforced in Nigeria under the ACA
or, directly pursuant to the New York Convention (Tulip Nigeria Ltd v Noleggioe
Transport Maritime [2011] 4 NWLR (Pt 1237) 254).
Nigeria ratified the International Centre for Settlement of
Investment Disputes (ICSID) Convention in 1965, and domesticated it through the
International Centre for Settlement of Investment Disputes (Enforcement of
Awards) Act 1967.
A foreign arbitral award may also be enforced pursuant to the
Reciprocal Enforcement of Judgments Act 1922, which was promulgated to ensure
ease of registration and enforcement of court judgments obtained in the United
Kingdom and certain Commonwealth countries and includes the enforcement of
arbitral awards in the definition of judgments, as long as they have become
enforceable as judgments of a court in the country in which the award was
handed down.
·
Is the state a party to the 1958 New York Convention? If yes,
what is the date of entry into force of the Convention? Was there any
reservation made under article I(3) of the Convention?
Nigeria is a party to the New York Convention. It acceded to the
Convention on 17 March 1970, which formally came into force in the territory of
Nigeria on 15 June 1970.
Nigeria made a reservation under article 1(3) of the Convention
to the effect that she would apply the Convention only on the basis of:
reciprocity to the recognition and enforcement of awards made only in the
territory of another contracting state party to the Convention, and to
differences arising out of legal relationships, whether contractual or not,
which are considered as commercial under the laws of the Federal Republic of
Nigeria.
Note, however, that in so far as recognition and enforcement of
arbitral awards in Nigeria is concerned, the reservation made relating to
reciprocity appears to have been waived by the provisions of section 51 of the
ACA (discussed in question 4).
Recognition proceedings
6 Which court
has jurisdiction over an application for recognition and enforcement of
arbitral awards?
Both the Federal High Court and the various state high courts
have jurisdiction to entertain an application to enforce an arbitral award, be
it domestic or foreign. Magbagbeola v Sanni [2002] 4 NWLR (Pt 756) 193. That
said, the Court of Appeal ruled in Kabo Air Limited v The O’Corporation Limited
[2014] LPELR 23616 CA, albeit in the context of the enforcement of a judgment
of the High Court of Gambia, that it is the particular court that would have
had original subject-matter jurisdiction over the underlying dispute that would
have capacity to entertain an application to enforce a foreign judgment arising
therefrom. Accordingly, it may be prudent to file an application for enforcement
of an arbitral award in the particular court; Federal High Court or state high
court, which would have had jurisdiction to entertain the subject matter of the
dispute that was resolved in the arbitration.
However, in respect of an ICSID award, the Supreme Court of Nigeria is the only
court with jurisdiction to entertain enforcement proceedings.
·
What are the requirements for the court to have jurisdiction
over an application for recognition and enforcement of arbitral awards? Must
the applicant identify assets within the jurisdiction of the court that will be
the subject of enforcement for the purpose of recognition proceedings?
For the court to have jurisdiction over an application for
recognition and enforcement of an award it must have jurisdiction over the
award debtor, either by virtue of the award debtor being present in Nigeria and
being served with process or by virtue of the award debtor being amenable to
service of process outside the jursidiction under the applicable rules of court
for this purpose. To exercise jurisdiction, the court must be satisfied that
the recognition and enforcement processes have been properly served on the
award debtor.
There is no requirement that an applicant must identify assets
within the jurisdiction of the Nigerian court that will be the subject of
enforcement for the purpose of recognition proceedings. This matter would only
come up after the enforcement order has been granted and the applicant wishes
to levy execution. At this stage, specific information on the defendant’s
assets will be required to enable the issue of execution processes.
8 Are the
recognition proceedings in your jurisdiction adversarial or ex parte?
Recognition proceedings in respect of an arbitral award are
usually adversarial as most of the
applicable rules of court
provide that recognition proceedings shall be ‘on
notice’. Although Order 52, Rule 16(1) of the Federal High Court (Civil Procedure) Rules 2009 provide
that the proceedings may be commenced ex parte, the court will invariably order
the respondent to be put on notice since any resultant order would affect the
respondent’s assets.
9 What
documentation is required to obtain the recognition of an arbitral award?
The following documentation is required to be attached to the
enforcement application under the ACA 1988:
·
the duly authenticated original award or a duly certified copy
thereof;
·
the original arbitration agreement or a duly certified copy
thereof; and
·
if an award or arbitration agreement is not made in the English
language, a duly certified translation thereof into the English language.
In addition to the above statutory requirements, the courts have
also required:
·
the name and last known place of business of the person against
whom the award is intended to be enforced; and
·
a statement that the award has not been complied with, or
complied with only in part.
See: Imani & Sons Ltd v Bil Construction Co Ltd [1999] 12
NWLR [Pt. 630] 253.
·
If the required documentation is drafted in another language
than the official language of your jurisdiction, is it necessary to submit a
translation together with an application to obtain recognition of an arbitral
award? If yes, in what form must the translation be?
Yes, it is necessary to submit a translation as required under
section 51(2)(c) of the
ACA. The translation shall be certified by a court-approved translator or by a
diplomatic agent. A full translation is necessary.
11 What are the other
practical requirements relating to recognition and enforcement of arbitral
awards?
A party seeking leave to enforce an award will have to pay the
applicable filing fee. The fees will be assessed by the appropriate court
registry on a scale that is reviewed from time to time. At present, the Federal
High Court charges on the average, a sum equivalent to US$150 as filing fees
for an application for the recognition and enforcement of a foreign arbitral
award. The various state high courts charge a sum equivalent to less than US$100
as filing fees.
If the court recognises an award and grants leave to enforce,
the mode of enforcement will determine the fees that are payable. For instance,
if the award creditor chooses the route of filing garnishee proceedings to
attach the monies in the bank accounts of the award debtor, the filing fee
payable for a garnishee proceeding is about 3,000 naira. However, if there are
no available funds, the award creditor would have to apply for a writ of fieri
facias to execute the award against the movable assets of the award debtor.
This route is quite expensive as the court sheriff may have to enlist the
assistance of recovery
specialists and other external agents to secure these assets. The costs of this
exercise will lie between 150,000 and 200,000 naira.
12 Do courts recognise and
enforce partial or interim awards?
Yes, the courts will recognise and enforce partial or interim
awards in so far as it is a final determination of the substantive issues and
questions in a reference, as distinct from procedural orders and directions.
Indeed, a partial award was enforced in Celtel Nigeria BV v Econet Wireless Ltd
& Ors [2014] 2 CLRN 63.
·
What are the grounds on which an award may be refused
recognition? Are the grounds applied by the courts different from the ones
provided under article V of the Convention?
Section 52 (2) of the ACA 1988 list the grounds for refusal of
enforcement. These grounds are essentially drawn from article V of the NYC and
can be broadly split into two.
First, if the
party against whom an award is sought to be enforced furnishes proof of the
presence of vitiating elements, such as: that the arbitration agreement was
invalid by reason of the incapacity of one of the parties thereto, or that it
was not valid under the governing law of the jurisdiction of either the contract or the seat of arbitration; or that the
award deals with a dispute that does not fall within the terms of the submission to
arbitration; or that the composition of the arbitral tribunal, or the arbitral procedure, was not in
accordance with the agreement of the parties; or that the award has been set aside by a court at
the seat of
arbitration.
Second, if the
court finds that the subject matter of the dispute is not arbitrable under Nigerian law, or that
enforcement of the
award would be against public policy.
Apart from the statutory grounds, the courts have ruled that an
arbitral award (domestic or foreign) will not be recognised or enforced if it is statute barred.
The enforcement application must be filed within the six years after the cause
of action
arose (City Engineering Nigeria Limited v Federal Housing Authority [1997] 9
NWLR (Pt 520) 244).
·
What is the effect of a decision recognising the award in your
jurisdiction? Is it immediately enforceable? What challenges are available
against a decision recognising an arbitral award in your jurisdiction?
Once the proceedings for recognition and enforcement of an award
are properly initiated, and the award is recognised; it is immediately
enforceable as if it were a judgment of the court in Nigeria. Shell Trustees
(Nig.) Ltd v Imani & Sons (Nig.) Ltd [2000] 6 NWLR (Pt 662) 639.
The award debtor is entitled to challenge the recognition
decision on its merits before the appellate courts.
·
What challenges are available against a decision refusing to
recognise an arbitral award in your jurisdiction?
Any final decision of the state high court or Federal High Court
refusing recognition can be challenged by an appeal to the Court of Appeal, and
subsequently to the Supreme Court if necessary.
·
Will the courts adjourn the recognition or enforcement
proceedings pending the outcome of annulment proceedings at the seat of the
arbitration? What trends, if any, are suggested by recent decisions? What are
the factors considered by courts to adjourn recognition or enforcement?
Considering that one of the grounds for refusal of enforcement
of an award is that the award has been set aside or suspended by a court in
which, or under the law of which, the award was made, it is highly likely that
the courts will adjourn recognition or enforcement proceedings pending the
outcome of annulment proceedings at the seat of the arbitration.
There are no reported cases we are aware of in which this issue
has arisen in Nigeria.
·
If the courts adjourn the recognition or enforcement proceedings
pending the annulment proceedings, will the defendant to the recognition or
enforcement proceedings be ordered to post security? What are the factors
considered by courts to order security? Based on recent case law, what are the
form and amount of the security to be posted by the party resisting
enforcement?
Section 52 (3) of the ACA 1988 provides that if an application
for setting aside of the award has been made at the seat, the court before
which the recognition or enforcement is sought may, if it considers it proper,
postpone its decision and may on the application of the party claiming
recognition or enforcement of the award, order the other party to provide
appropriate security.
We are not aware of any case law in Nigeria in which this
specific issue has been determined. However, drawing on the analogous situation
in maritime practice where a defendant may be ordered to provide security for
the release of an arrested vessel, it has been held that the factors which
would be considered by the court in ordering security for costs include: (i)
whether the plaintiff’s claim is bona fide and not a sham; (ii) if there is an
admission by the defendant on the pleadings or elsewhere which shows that the
defence (or the annulment application as the case may be) is weak; (iii) if it
appears by credible evidence that there is reason to believe that the defendant
will be unable to pay the costs of the action if the defence (or annulment
application) is unsuccessful; (iv) if the residence of the defendant is
incorrectly stated in its papers, unless the misstatement is innocent and made
without any intention to deceive; (v) if a defendant is only temporarily
resident in the jurisdiction and has no known assets therein which can be
attached; (vi) whether the application for security for costs is being used
oppressively so as to stifle an otherwise genuine claim. Oduba v Houtmangracht
[1997] 6 NWLR (Pt 508) 185.
·
Is it possible to obtain the recognition and enforcement of an
award that has been fully or partly set aside at the seat of the arbitration?
In case the award is set aside after the decision recognising the award has
been issued, what challenges are available against this decision?
Although there is no reported case law on this issue; given the
provisions of section 52(2) of the ACA 1988 (listed above), it is safe to say
that the Nigerian courts will not ordinarily entertain an application to
recognise and enforce an award that has been set aside at the seat.
In a situation where the fact that the award has been set aside
at the seat of the arbitration was not brought to the court’s attention during
the recognition proceedings; the award debtor can, before the award was
enforced, apply to the enforcing court to set aside the decision on grounds
premised upon the annulment of the award. However, once the award has been
enforced and satisfied, it will not be possible to reverse the enforcement on
this basis.
Service
·
What is the applicable procedure for service of extrajudicial
and judicial documents to a defendant in your jurisdiction?
The different State High Courts and the Federal High Court have
different rules for service. Thus, the procedure for service of extrajudicial
and judicial documents to a defendant in Nigeria will depend on the applicable
State High Court Rules or the Federal High Court Rules. In most instances, the
rules require judicial processes to be personally served on the award debtor
(if a natural person), or to be served at the award debtor’s registered office
or advertised place of business (if a juridical entity) within the
jurisdiction. It is important to note however that where the documents to be
served are issued by a court or tribunal outside Nigeria, it is the procedure
prescribed by the Federal High Court Rules that will apply.
·
What is the applicable procedure for service of extrajudicial
and judicial documents to a defendant out of your jurisdiction?
The various rules of court require the applicant to file a
without-notice application to obtain leave of the court to serve extrajudicial
and judicial documents on a defendant who is out of jurisdiction. The grounds
upon which such leave will be granted are stated in the various rules of court
and generally require that the applicant establish a nexus between the
defendant and/or the cause of action and the forum. Once leave is granted, the
court will require satisfactory proof of service (ie, an acknowledgement slip
duly signed or stamped, or other reliable document that evidences service).
Identification of assets
·
Are there any databases or publicly available registers allowing
the identification of an award debtor’s assets within your jurisdiction?
There are no publicly available registers allowing the
identification of an award debtor’s assets in Nigeria in a situation where no
information exists as to the identity of these assets. There are publicly
available registers by which the status of known assets may be confirmed or
verified. For example, information about land ownership can be found at the
land registry in each state.
·
Are there any proceedings allowing for the disclosure of
information about an award debtor within your jurisdiction?
Order IX (Judgment Summons) of the Judgment Enforcement Rules
made pursuant to section 94 of the Sheriffs and Civil Processes Act (SCPA) 1945
empowers a court, upon a judgment (or award) creditor’s application, to issue a
summons to compel a judgment (or award) debtor to disclose his or her assets
within the jurisdiction.
Section 9 of Order IX
provides that upon the issue of a judgment summons, the judgment debtor may
file in duplicate a full statement and account of all property of whatever
nature belonging to him, whether in expectancy or possession, and whether held
exclusively by him or jointly with others, or by others in trust for him,
excepting the necessary wearing apparel of himself and his family and the
necessary implements of his trade, if any, to the value of ten naira, and of
the places respectively where such property is to be found.
If at the hearing of the summons the judgment debtor shall
satisfy the court that he or she has made a full surrender and discharge of his
property, failing which he or she may be committed to prison.
Enforcement proceedings
·
Are interim measures against assets available in your
jurisdiction? May award creditors apply such interim measures against assets
owned by a sovereign state?
Interim measures are available in Nigeria. An applicant can
invoke the powers of the courts to grant injunctive orders in all cases in
which it appears to the court to be just or convenient so to do. These powers
can be exercised to grant injunctive orders to preserve assets both before and
during enforcement proceedings. Any such interim measure may be made either
unconditionally or upon such terms and conditions as the court may consider
appropriate.
In practice, the applicant may be required to demonstrate that
there is a real risk of dissipation of these assets before the enforcement
proceedings are initiated and completed.
The above relief would not be exercised against assets owned by
a sovereign state. Nigerian law upholds the doctrine of sovereign immunity,
which protects the assets of a foreign sovereign from execution.
·
What is the procedure to apply interim measures against assets
in your jurisdiction? Is it a requirement to obtain prior court authorisation
before applying interim measures? If yes, are such proceedings ex parte?
An application for interim measures will be commenced ex parte
on grounds that the assets may be irretrievably dissipated if the award debtor
is given notice of the application. Any interim order made by the court will be
served on the award debtor alongside a substantive application for
interlocutory relief. The interim order will abate after a fixed period (seven
or 14 days in most instances). The court may grant an extension for a further
period. Within this period, it is expected that the substantive application
will be argued and, if successful, an interlocutory injunctive order
restraining dealing with the asset will be issued by the court to preserve the
asset until the final determination of the enforcement proceedings.
·
What is the procedure for interim measures against immovable
property within your jurisdiction?
The procedure for obtaining interim measures against immoveable
property is same as the procedure in question 24.
·
What is the procedure for interim measures against movable
property within your jurisdiction?
The procedure for obtaining interim measures against movable
property is same as the procedure outlined in question 24.
27 What is the procedure for
interim measures against intangible property within your jurisdiction?
On the assumption that intangible property as referred to here
relates to property such as shares in a company, etc; the procedure for
obtaining interim measures against such property will be fact specific and
depend on the type of intangible property involved. This procedure will be a
modified version of the procedure outlined in question 24.
·
What is the procedure to attach assets in your jurisdiction? Is
it a requirement to obtain prior court authorisation before attaching assets?
If yes, are such proceedings ex parte?
Any party who has been granted leave to enforce an award by the
court will be able to enforce it as though it were a court judgment. If there
is no stay of execution or of proceedings because of a pending appeal or
challenge to the award, the award creditor will apply to attach assets
belonging to the award debtor. An application will need to be made by the
judgment creditor to the court for the issuance of a writ of attachment, which
will need to be signed by the judge.
Note that there are some statutory limitations in place against
attachment or execution against certain state property. For example, section 84
of the Sheriffs and Civil Processes Act (SCPA) 1945, the consent of the
Attorney General of either the Federation or individual state must be obtained
before attaching public funds. This can be a difficult process as the consent
of the Attorney General to attach state funds is notoriously difficult to
obtain. That said, a writ of mandamus to compel the Attorney General’s consent
may be obtained from the courts if such consent is unreasonably refused (Onjewu
v Kogi State Ministry of Commerce and Industry & Ors [2003] 10 NWLR (Pt.
827) 40).
29 What is the procedure for
enforcement measures against immovable property within your jurisdiction?
An award creditor can apply to the court for a writ of execution
against the immovable property of the award debtor if no moveable property of
the judgment debtor can, with reasonable diligence, be found, or if the movable
property is insufficient to satisfy the award and the costs of execution
(section 44 of the SCPA).
30 What is the procedure for
enforcement measures against movable property within your jurisdiction?
The SCPA details various methods of execution of a judgment
debt. First, a writ of fieri facias (fifa) can issue against movable property.
The writ empowers the Sheriff to seize and sell an adequate quantity of goods
belonging to the award debtor until the judgment debt is satisfied.
Second, garnishee proceedings may be commenced to order a third
party who is indebted to, or in custody of funds belonging to the award debtor
to pay directly to the judgment creditor the debt due or so much of the debt as
may be sufficient to satisfy the award and the costs of the enforcement
proceedings.
Third, a judgment summons can be issued to cause the award
debtor to attend court and be examined on oath concerning his ability to pay
the debt. If the court is satisfied that the debtor can pay but chooses not to,
he or she may be committed to prison. If, however, it is proven that the debtor
has genuine difficulty in paying, the court can make orders such as payment of
the debt in instalments.
31 What is the procedure for
enforcement measures against intangible property within your jurisdiction?
On the assumption that intangible property as referred to here
relates to property such as shares in a company, that property can be attached
by a court order in satisfaction of the award debt. The court’s order to divest
ownership of such shares from the award debtor for the purpose of satisfying
the debt would be served on the company secretary and the company’s registrars
to ensure compliance. Indeed, section 151(2) of the Nigerian Companies and
Allied Matters Act, Chapter C20, Laws of the Federation of Nigeria 2004, provides that company shares can be transferred
by an instrument of share transfer, or by operation of law.
Enforcement against
foreign states
·
Are there any rules in your jurisdiction that specifically
govern recognition and enforcement of arbitral awards against foreign states?
There are no specific rules.
33 What is the applicable
procedure for service of extrajudicial and judicial documents to a foreign
state?
Diplomatic channels are used for the service of legal documents
on a foreign state. Such documents are transmitted through the Nigerian
Ministry of Justice and the Nigerian Ministry of Foreign Affairs to the
government of the foreign state (Order 7, Rule 18 of the Federal High Court
Rules 2009).
·
Are assets belonging to a foreign state immune from enforcement
in your jurisdiction? If yes, are there exceptions to such immunity?
The Diplomatic Immunities and Privileges Act (DIPA) 1962
protects the official residence and offices of the envoy of a foreign state
from attachment or seizure by judicial process in Nigeria.
Aside from the limited diplomatic immunity contained in the
DIPA, the common law doctrine of sovereign immunity will avail, in the absence
of an express waiver, to protect the assets of foreign sovereigns from
execution in Nigeria.
·
Is it possible for a foreign state to waive immunity from
enforcement in your jurisdiction? If yes, what are the requirements of such
waiver?
Section 2 of the DIPA allows a foreign state entitled to
immunity to waive such immunity in the same way that a person who is entitled
to the benefit of a statutory provision can decide to waive it and allow the
transaction to proceed as though the provision did not exist.
Having said that, while it is settled that jurisdictional
sovereign immunity can be waived, as was done in the cases of
African Reinsurance Corporation v Fantaye [1986] 3 NWLR (Pt 32) 811, African
Reinsurance Corporation v AIM Consult Ltd [2004] 11 NWLR (Pt 884) 223 and
Oluwalogbon v Government of UK
[2005] 14 NWLR (Pt 946) 760, it is doubtful that these authorities support, or
are applicable to the issue of, waiver
of
sovereign immunity against the attachment of sovereign assets, if the initial jurisdictional hurdle is cleared.
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